Representing the World

Lawyers Seal the Deal Home and Abroad

Gretta Spendlove and Katie Peterson

March 9, 2009

If you listen to the radio, you might hear the Salt Lake Chamber of Commerce’s recent ad “Utah is global!” The fact that merchandise exports topped $10 billion in 2008, with more than 2,000 Utah companies exporting internationally, substantiates the claim and is fueling growth in the practice of international law.
“I have some clients who are still working out of their garages, but they’re selling internationally,” says Scott Isaacson, head of the international section of Kirton & McConkie, a Salt Lake law firm. “It’s amazing how smart entrepreneurs, instead of trying to get shelf space at their local Wal-Mart, are marketing their products in Europe or Asia.”
Crossing Career Borders
“When I was deciding what I wanted to do with my life back in 1966, I took an inventory of what was exciting to me,” reminisces Dwight Williams. “That included foreign languages, ethnic cuisine, comparative culture and travel. I wasn’t born with silver chopsticks, so I needed a career that would feed those interests.” Williams developed a foreign law practice, which has led him to exotic deals and locations. One of his clients is a company based in Switzerland that is using sophisticated heavy construction technology for projects in Europe and Libya. Primary owners of the company live in Germany and California, with a CEO based in Texas.
Williams, who is of counsel to Salt Lake firm Mackay Price Thompson & Ostler, spends about 25 percent of his time traveling, and has logged more than 100,000 miles per year for the last 10 years, meeting with clients and negotiating deals.
So, how can a novice join the international law field? “Business lawyers can help their clients visualize international opportunities, such as taking a new technology abroad,” says Williams. “They can then affiliate with an international lawyer for the first deal or two, and, once they have been on the team, they can branch out on their own.”
“There’s little international law in most international transactions,” says Isaacson. “Most international transactions are just contracts, governed by the jurisdiction of one of the parties. I tell associates who want to become international lawyers to first become really good contract lawyers, pay attention to detail and know what provisions are essential. You have to be a good general corporate lawyer and then you can learn to maneuver in the international field.”
Utah’s law schools are beginning to provide more training in international law. James Backman, law professor at BYU, supervises four- to six-week international externships for more than 50 BYU law students. “The student tells us what country he or she wants to work in, and we find the job,” Backman says. Additionally, BYU offers more than 20 courses with an international emphasis, such as international tax, and offers an LLM in comparative law for foreign lawyers.
Making Connections
“It’s not hard to do international work in Utah,” says Damian Smith, an attorney for Salt Lake firm Parr Brown Gee & Loveless. “So long as you have a cell phone, email, are willing to jump on an airplane and talk in the evening when your clients wake up in the morning. At 5 or 6 p.m., I start getting calls from Asia.” Smith thinks Utah international lawyers can create business by being more competitive on fees than the large firms on the coasts. “As the world gets flatter and there’s more outsourcing, the market for international lawyers in Utah will continue to be good,” he says.
Smith’s international legal career began with an LDS Church mission to Japan. He then served as the Japanese expert for Seattle law firm Perkins Coie, lived in Manila and Hong Kong for six years as Asian counsel for the LDS Church, and finally returned to Salt Lake City. “Through the church experience, I developed a network of attorneys in Asia,” Smith says. “They were helpful as I expanded my practice.”
Barbara Melendez, a Kirton & McConkie lawyer specializing in international employment issues, also says her relationships have lead to more work. “My snowboarders refer me to other snowboarders,” she says. Melendez was born in Caracas, Venezuela and has lived in Cuba, Puerto Rico and Brazil. She is fluent in Portuguese and Spanish, and originally developed international expertise through serving as counsel for the Mexican consulate and the honorary Brazilian consulate in Utah. She gained knowledge of immigration law to service those clients, and then began handling related issues, such as transferring employees between divisions of multinational companies located in different countries. The moves often involve international tax issues and family law issues, as well as immigration ones. “In this economic climate, businesses seek knowledge and specialized skills from their own companies. They’ll move an employee from the China division to the California division, rather than hire from outside.”
Melendez represents a wide variety of clients on cross-border employment issues, from Swire Coca-Cola, which has a bottling plant in Draper, to Auto-Liv, a worldwide company that makes air bags. She also represents companies that contract with international athletes and performers in bringing outstanding athletic and artistic professionals to live and work in the U.S.
Mike Mangelson also began his international career equipped with a foreign language from studying Mandarin in college. He then worked with Morrison & Foerster law firm in Hong Kong and Jones Day law firm in Taiwan. Magelson is a member of the Stoel Rives China Strategy Committee, comprised of attorneys from that law firm practicing in Salt Lake City, Portland and Seattle. “Stoel Rives has a strong renewable energy practice,” Mangelson says. “And China is investing in alternative energy. We want to leverage our expertise to U.S. companies marketing their technology to China.”
Mangelson also has an international trademark practice. Whereas trademarks used to be filed through local lawyers in each foreign country, the new Madrid Protocol allows most foreign filings to be done online, through the U.S. Patent and Trademark Office.
Middleman Expertise
Competent international lawyers know how to identify the most important provisions in international deals, recognize the points of the transaction that will be affected by differences in law and culture and “translate concepts back and forth” between countries and cultures.
“I was on the phone this morning with a lawyer from Guadeloupe, in the Caribbean, setting up a business entity for a multinational,” Isaacson explains. “The governing law in Guadeloupe is French. I work with local attorneys and manage those relationships for the client.”
Isaacson stresses that while he does not personally know the fine points of each country’s law, “I can’t draft a contract that will be governed by the law of Albania.” Managing relationships with foreign professionals has great value for American clients, he adds. “We know how much they charge, we know if they’re honest, we know if they’re reliable,” he says. As Smith describes the management function, “I advise clients of what to expect in Asia, what things cost, what the legal system is and I put them together with the right professionals. I stay involved to the extent they want me to manage the Asian lawyers.”
In Japanese transactions, Smith takes a more hands-on role because he speaks the language and knows the culture intimately. “I receive and send emails in Japanese,” he says. Smith recently negotiated a joint venture for Meiji Dairies Corporation, the largest dairy company in Japan, with a French yogurt company.
“International lawyers know generally how laws of different countries work,” says Williams. “And then they rely on local counsel for the specifics.” For instance, Williams knows that the data privacy laws of the EU are very stringent, and that the labor courts of France, Belgium and Italy usually decide against U.S. companies. Williams also knows that many foreign lawyers are not used to American-style opinion letters, which are very detailed and specific. “You ask for an opinion from many foreign lawyers, and you get a one paragraph answer,” Williams says. Anticipating those differences and working around them makes for a smoother deal.
“There are two types of international law: public international law, involving treaties, and private transactions, primarily based on contract law,” says Smith. “Very few lawyers in Salt Lake deal with international treaties.” Still, international lawyers need to be familiar with such treaties as Incoterms, which govern international sales, and with import/export regulations and the U.S. Foreign Corrupt Practices Act.
Multi-National Issues
One function of international lawyers is to identify critical issues in multi-national transactions. “Choice of law and dispute resolution issues are big deals in international contracts,” Smith comments. “Some countries, like China, require that arbitration be done in China for it to be enforced in Chinese courts. Sometimes, arbitration in Hong Kong is ideal for a Chinese contract, so the arbitration can at least be done in a western setting.”
Sara Jones, patent lawyer with the Salt Lake law firm Workman Nydegger, emphasizes the importance of clients and IP attorneys discussing strategies for protecting company assets both in the U.S. and abroad. “Stricter deadlines apply to international patents than to U.S. patents,” she says. “There is a one-year grace period in the U.S. within which public disclosures can be made about an invention before a patent must be filed. There is no such grace period in most foreign countries.”
Also, some foreign countries have more strict rules for the description of patent claims. “If you know that a client wants to file a patent in a foreign country, then it affects how you structure the patent in the U.S.,” says Jones, noting that the extremely high fees for filing patents abroad can discourage start-ups from doing foreign filings. “While a patent can be filed for $10,000 to $15,000 in the U.S., foreign filings can exponentially increase the cost.”
Helpful Collaborations
Salt Lake law firm Durham Jones & Pinegar was a founding member of the International Business Law Consortium (IBLC), a group of more than 100 law firms in 70 countries that refer work to each other and collaborate on business development and transactions. “That relationship has been extremely useful,” says Kevin Pinegar, managing partner of the firm. “Last year, one of the German firms in IBLC helped with an acquisition of a German company by our U.S.-based client. Another time, we had a client setting up a distribution network in Hong Kong, Singapore, China, Korea, and the Arab Emirates. We used IBLC firms in all those countries to consider the enforceability of provisions of the contracts, as well as to do due diligence on the distributors.” Other international networks, such as Lex Mundi and Taglaw, link law firms around the world. Utah firm VanCott Bagley Cornwall & McCarthy belongs to Lex Mundi and Kirton & McConkie belongs to Taglaw.
Williams is on the executive management committee of First Law International Sprl, a partnership of business law firms. First Law is headquartered in Belgium and includes 30 member firms in 25 countries, mostly located in Europe and major industrial areas. “The relationship is closer than merely making referrals,” Williams says.
Going the Distance
International lawyers have to have good legal judgment and contract drafting skills. They must have knowledge of differences in the laws between countries and sensitivity to cultural differences. Finally, international attorneys must be flexible enough to spend odd hours of the day fielding questions from clients and co-workers in different time zones. With these skills, Utah attorneys can serve, prosperously, in the field of international law.